Creativity May Be at the Root of Why the European Patent Office Won't Allow My US Claims; and Why the US Patent Office Won't Allow My European Claims

Differences between obviousness tests of the European Patent Office (EPO) and United States Patent and Trademark Office (USPTO) are often to blame for why a claim is allowed in one Office but not the other. The “problem and solution approach” of the EPO combines different prior arts in view of an objective technical problem (OTP). The “general rationale articulation approach” of the USPTO combines different prior arts by articulating rationales from various and broad points of view.

The “problem to be solved” is a common denominator when the two Offices analyze the inventive step, but differences include: “the way to define the problem," “features taken into account for the solution of the problem," “technical character of the problem and solution," and the “level of a person skilled in the art."

The EPO problem solution approach considers whether or not the claimed invention, starting from the closest prior art and the OTP, would have been obvious to the skilled person. In EPO practice, the closest prior art generally corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention (see?T?606/89). Also, the OTP is usually relevant to the problems or effects stated in the description.

The USPTO considers whether the difference between the subject matter sought to be patented and the prior art would have been obvious at the time to a person skilled in the art. The USPTO draws from a wider range of prior art. In US practice, a reference need only be either in the same field of endeavor or reasonably pertinent to the problem—it need not satisfy both criteria. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353 (Fed. Cir. 2020). It can be reasonably pertinent regardless of the field in which that reference was working. In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004).

Another difference is the level of skill of a person skilled in the art. The "person skilled in the art" is presumed to be a skilled practitioner in the relevant field of technology who is possessed of average knowledge and ability (average skilled person). The person skilled in the art is aware of what was common general knowledge in the art at the relevant date (see?T?4/98,?T?143/94?and?T?426/88).?EPO Examination Guidelines, Part G VII 3, March 2023 edition. However, he/she is not recognized to have any creative abilities in practice. EPO, Case Law of the EPO Boards of Appeal (EPO BoA Case Law), I.D 8.1, 7th ed. Sep. 2013, p187. See Comparative Analysis of Inventive Step/Nonobviousness Standard and Case Study Thereof – from the Aspect of “the Problem to be Solved."

In the EPO inventive step analysis the question to be answered is whether there is any teaching in the prior art as a whole that?would?(not simply could) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves (see?G?VII,?4).?EPO Examination Guidelines, Part G VII 5.3, March 2023.

Closest prior art can be combined with secondary documents but there must be a motivation to combine. The fact that more than one disclosure must be combined with closest prior art to arrive at the claimed invention, may be an indication of the presence of inventive step, unless the claimed invention is a mere aggregation of features or a solution to a plurality of independent “partial” problems. (EPO Exam. Guidelines, Part G VII 6, Mar. 2023). Thus, the EPO is less likely to combine a plethora of references.

The EPO defines that a person skilled in the art has no creativity and he/she has to find a technical solution to solve the OTP. Thus, features not contributing to the solution of the OTP should not be part of the solution. Likewise, if the solution provided by the claimed invention is so obvious that a person skilled in the art will absolutely adopt it without exercising creativity, an unexpected effect is a bonus effect that cannot change the result that the claimed invention involves no inventive step.

In contrast, the US Supreme Court emphasized that “a person skilled in the art is also a person of ordinary creativity, not an automaton.” KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2017). In many cases, a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle (KSR, Note 39, 550 U.S. at 420, 82 USPQ2d at 1397).

Thus, the US Examiner has more freedom to determine a motivation to combine multiple references. “Consistent with KSR, the Federal Circuit makes it clear that the obviousness analysis is not ‘confined by a formalistic conception of the words teaching, suggestion, and motivation.’ To be sure, the Federal Circuit continues to use the word ‘motivation’ in its obviousness jurisprudence. However, it is evident that the term is no longer understood in a rigid or formalistic way." Quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784 (Fed. Cir. 2021). The list of permissible motivations endorsed by the 27 Feb, 2024 USPTO Updated Guidance for Making a Proper Determination of Obviousness, guidelines is expansive, including “market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.”

However, the US Examiners must consider all claim limitations when determining patentability of an invention over the prior art. USPTO, MPEP 2143.03. Also, the USPTO gives more weight to data proving “unexpected advantages."

Article by Tony Venturino, Partner